In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc, the United States Supreme Court held that a prior public sale of a patented product could destroy the novelty of a patent for that product even though there was no disclosure of the inventive feature. On January 22, 2018 in a unanimous decision authored by Justice Thomas, the Supreme Court held that changes in statutory language effected by the America Invents Act did not change the pre-existing law with respect to what constitutes a novelty bar to the grant of a patent as a result of a product having been placed “on sale” prior to the critical date of the patent.

The America Invents Act amended the relevant part of 35 USC 102 as follows:

A person shall be entitled to a patent unless —

The claimed invention was patented or described in a printed publication or in public use or on sale or otherwise available to the public, before the effective filing date of the claimed invention.

A separate provision of the new law still provides a one-year grace period for publications or acts of or deriving from the inventor.

Since the law was amended, there has been much theorizing about whether the addition of the words “or otherwise available to the public” meant that placing an article on sale prior to the date that was critical for determining novelty now meant that, unlike the situation established by case law under the prior law, such an offer for sale would only be novelty-destroying if the nature of the invention could be determined from what was offered for sale so that “black box” sales would no longer constitute prior art. The Supreme Court has now scotched such theories.

The Court reached back to its own 1829 decision in Pennock v. Dialogue where it had held:

“it would materially retard the progress of science and the useful arts” to allow an inventor to “sell his invention publicly” and later “take out a patent” and “exclude the public from any farther use than what should be derived under it and noted that an “on-sale” bar had been present in every patent statute since 1836.

Although in its 1998 decision in Pfaff v. Wells the Court had found that the on-sale bar applied when there was a commercial offer for sale of a product that was ready for patenting, the Court had not previously explicitly considered whether that offer had to make details of the invention available to the public. However, the Federal Circuit had considered this issue and had set out what Justice Thomas saw as being implicit in earlier Supreme Court decisions, namely that “secret sales” could invalidate a patent. Against this background, it could not be concluded that by adding the words “or otherwise available to the public” to the statute, Congress had intended to change the prior law on this subject. It therefore upheld the decision of the Federal Circuit that the sale of the patented product sufficed to trigger the “on-sale” bar and “details of the invention need not be publicly disclosed in the terms of sale” for the on-sale bar to apply.